This is a mandatory administrative proceeding pursuant to Paragraph 4 of the Uniform Domain Name Dispute Resolution Policy (the "Policy" or "UDRP"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") and the CAC Supplemental Rules.
Paragraph 15 of the Rules provides that the Panel shall decide the complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable.
According to Paragraph 4(a) of the Policy, the Complainant must prove each of the following: (i) the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; (ii) the Respondent has no rights or legitimate interests in respect of the domain name; (iii) the domain name has been registered and is being used in bad faith.
A. Identical or confusingly similar
The Complainant demonstrated that it owns the asserted international trademark registration for the word mark "Boehringer-Ingelheim" that was registered more than 60 years earlier than the disputed domain name. It is well established that a nationally or regionally registered trademark confers on its owner sufficient rights to satisfy the requirement of having trademark rights for the purposes of standing to file a UDRP case. Therefore, the Panel finds that the Complainant has established such rights.
It is also well established that the generic top-level suffix .com may be disregarded when considering whether a domain name is identical or confusingly similar to a trademark in which the complainant has rights, as it is a necessary technical requirement of a domain name.
The disputed domain name incorporates the Complainant's trademark "Boehringer-Ingelheim" in its entirety, except for the hyphen. The adding of the terms “PPET REBATES” must be considered as insufficient to prevent or diminish confusing similarity. The Panel agrees with the Complainant that such addition does not change the overall impression of the designation as being connected to the Complainant’s trademark "Boehringer-Ingelheim", particularly given the descriptiveness of the added terms "PET REBATES" and link to the animal product offers by the Complainant. Therefore, such addition cannot prevent the likelihood of confusion between the disputed domain name and the Complainant, its trademark and its associated domain names.
The Panel, therefore, finds that the disputed domain name is confusingly similar to the trademark in which the Complainant has rights.
B. Lack of rights or legitimate interests
The Respondent has not filed a Response and has neither provided any other information that would oppose the Complainant's allegations. Therefore, the Panel holds that the Complainant successfully presented its prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed domain name.
In particular, the Respondent is not in any way connected with the Complainant nor is it authorized to use the Complainant’s trademark for its commercial activities. In addition, the Respondent is not commonly known by the disputed domain name pursuant to Paragraph 4(c)(ii) of the Policy. Furthermore, it was demonstrated by evidence submitted by the Complainant that the disputed domain name has not been used for a bona fide offering of goods or services or a legitimate non-commercial or fair use, particularly because it redirects to a parking page with commercial links (at least the time of making the Complaint).
The Panel, therefore, finds that the Respondent has no rights or legitimate interest in the disputed domain name.
C. Registration and use of the disputed domain name in bad faith
With respect to the bad faith argument, the Complainant states, in summary, that the disputed domain name is confusingly similar to its well-known trademark; that the Respondent had actual knowledge of the Complainant's rights in the trademark because it (a) chose the disputed domain name to create a confusion with the domain name <boehringeringelheimpetrebates.com> which the Complainant uses to offer rebates on pet health products, and (b) had already before registered the domain name <boheringer-ingelheim.com> that clearly includes misspelled trademark of the Complainant; that the disputed domain name is redirected to a parking page with commercial links; and that the Respondent has a track record containing numerous UDRP case where the Respondent's bad faith was established.
The Panel has already found that the disputed domain name is confusingly similar to the Complainant's trademark "Boehringer-Ingelheim". The Panel believes that the Complainant submitted evidence that sufficiently demonstrates the Respondent must have been aware of the existence of the Complainant, its trademark and its <boehringer-ingelheim.com> and <boehringeringelheimpetrebates.com> domain names. The evidence submitted by the Complainant also shows that, at least upon filing the complaint, the disputed domain name was directed to a parking page with commercial links.
It is well established that mere registration of a domain name that is confusingly similar to a trademark by an unaffiliated entity can lead to the presumption of bad faith. Furthermore, typical circumstances demonstrating respondent's bad faith include a situation where the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainant's trademark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on the respondent's website or location (see Paragraph 4(b)(iv) of the Policy). In view of the Panel, it is beyond any doubt that the disputed domain is intentionally composed to include an extra letter "P" so that visitors to the Complainant website at <boehringeringelheimpetrebates.com> who misspell the address are redirected to the commercial links at the disputed domain, ultimately to the commercial gain of the Respondent.
Furthermore, the Panel has taken notice of the other UDRP cases involving the Respondent which are mentioned in the Complaint. Of its own motion, the Panel has also become aware of further recent decisions concerning the Respondent (as well as the same Complainant) - CAC Case No. 102854, CAC Case No. 102871 and CAC Case No. 102872. The Panel can safely conclude that the Respondent is a "repeat offender" and has clearly been engaged in a pattern of conduct of registering domain names containing the marks of the Complainant (and) others.
Taking into account the above-described facts and evidence submitted by the Complainant, the Panel is satisfied that not one but several signs of bad faith in registering and use of the disputed domain name by the Respondent can be found in this case. Therefore, the Panel finds that the disputed domain name has been registered and has been used by the Respondent in bad faith.
In conclusion, the Panel finds that all three elements required by Paragraph 4(a) of the Policy were met and makes the following decision.
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